In Nippon Steel Corporation vs Controller General Of Patents, Designs, The High Court of Delhi in it’s decision dated 29 August, 2024, decided on the question whether impugned order of Controller of Patents not giving sufficient reasons and without any legal basis in rejecting Patent Application is liable to be set aside?
Brief Facts:
The Apllicant (Appellant) Nippon Steel Corporation filed Indian Patent Application as a national phase entry involving a “method for repairing an inside of a gas flue of a coke oven and a device for repairing an inside of a gas flue”.
The First Examination Report (FER) issued by Indian Patent Office only held that the claims lacked novelty and inventive step under Section 2(1)(j) of the Act and unity under Section 10 of the Patent Act (the Act).
Applicant filed a response to the said FER and then filed amended Claims.
The Controller then followed it up by a Hearing Notice raising additional objection under Section 3 of the Act
The Applicant responded thereto by supplementing it with post- hearing written submissions, especially responding to the objection(s) of the inventive step under Section 2(1)(j) and Section 3 of the Act.
However, the Applicant was not granted the patent as it was denied in terms of Section 15 of the Act by the Controller, and then also under Section 3(d) of the Act without specifying it in the Hearing Notice
The Law:
Patent Act 1970
Section 2(1)(j):
(j)”invention” means a new product or process involving an inventive step and capable of industrial application;
(ja) “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art
Section 3(d) of the Act contains the following categories/ basic elements qua an invention:
a. “mere discovery of a new form of a known substance,”
b. “mere discovery of any new property for a known substance,”
c. “mere discovery of new use of a known substance,” and
d. “mere use of a known process, machine, or apparatus.”
As per Section 3(d) of the Act, “the mere discovery of use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant” is precluded from the patentability
Section 15. Power of Controller to refuse or require amended applications, etc., in certain case.—
Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the appl ication on failure to do so
In Brief, Court’s Analysis, Reasoning And Findings:
The core of the dispute revolves around the patent-eligibility of the invention under Section 3(d) of the Act.
The aforesaid claims in the invention made by the appellant before the Court covered two subject matters:
I. A device, for repairing an inside of a gas flue of a coke oven, which is for repairing a damaged portion of the gas flue of the coke oven (Claim nos. 2 and 3).
II. A method, for repairing the inside of a gas flue of a coke oven using the device (Claim no.1).
The impugned order addresses only the subject matter covered in Claim no.1 and decides the same as mere use of a “known device”.
As per Controller, the subject matter of the application falls under the fourth category, i.e. “mere use of a known process, machine, or apparatus” of Section 3(d) of the Act since Claim no.1 of the invention is the mere use or application of the device covered in Claim no.2, yet, no objection qua novelty has been specified anywhere in the impugned order regarding Claim no.2, it is unclear as to what actually is the said “known process, machine, or apparatus” involved in the subject application of the appellant.
Similarly, the impugned order is silent/bereft of any prior art document from which the device for implementing the method claimed in Claim no.1 is known.
Though the Controller has cited a prior art document D1 in the Hearing Notice, however, there is no adverse observation on the novelty and inventive step of both Claim nos.1 and 2.
The Delhi High Court held that aforesaid is sufficient to conclude that the Controller has acknowledged the novelty and inventive step of the claims. The device for implementing the method claimed in Claim no.1 has been claimed in Claim no.2 of the subject application. Therefore, since it cannot be presumed to be a “known process, machine, or apparatus”, the Controller has erred in holding to the contrary.
Judgments Relied Upon by Delhi High Court to come to conclusion:
D.S. Biopharma Limited vs. The Controller of Patents and Designs and Anr.
Manohar v. State of Maharashtra & Ors.
Agriboard International LLC v Deputy Controller of Patents And Designs
The Decision:
Court in view that impugned order did not give sufficient reasons and was without any legal basis, particularly, since it is without identification of a “known substance and/or device”, held that the impugned order not to be sustainable in the eyes of law and set aside the same with the directions that the matter be remanded to the respondent Controller of Patents for fresh consideration.
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